“Stripper Idol” Part Deux

Gene Quinn at IP Watchdog has written this post about the ongoing “Stripper Idol” lawsuit (blogged by yours truly here).  In the post, he argues that the commentators on Fox News covering the story argued on the Bill O’Reilly program that because no one would confuse a strip club with American Idol, there’d be no likelihood of confusion as to source of the services, and therefore the strip club wins.  Gene writes:

While I do enjoy O’Reilly, the fact of the matter is that his legal correspondents were dead wrong, as are most legal correspondents when the attempt to pontificate about matters relating to patents, trademarks or copyrights.

He then states that a trademark dilution theory is most likely to be successful, as “likelihood of confusion” need not be proven.  While I agree with him that the O’Reilly commentators were “dead wrong” in their assessment of the merits of the suit, I respectfully disagree that dilution is the best theory for FremantleMedia to pursue.

First, dilution is sticky because you have to prove that your mark is “famous.”  Under the Texas dilution statute, which may be more liberal than the Section 43(c) of  the Lanham Act, fame may be easier to prove.  But it’s still a significant threshold of proof that the plaintiffs must overcome.

Second, a number of recent federal decisions have noted that for a junior mark to dilute a senior mark, the junior mark must be nearly identical to the senior mark.  In other words, if we’re not going to look at consumer confusion, you have to prove a very close nexus between the allegedy famous mark and the allegedly diluted mark.  While STRIPPER IDOL and Design may be close the AMERICAN IDOL and Design design, it’s a hard burden to show that the more risque mark actually dilutes the distinctive quality of AMERICAN IDOL or tarnishes its image.

My continuing belief is that the best theory revolves around likelihood of confusion, not as to source of the goods, but as to sponsorship or affiliation. A typical survey question used to support Plaintiff’s case may ask something like “Do you believe this strip club had to get permission from anyone to use this logo? If so, who?”  I wouldn’t be surprised if a good percentage of people would respond “Yes; American Idol.”  That’s confusion as to sponsorship or affiliation.

Dilution is a good idea, too, particularly under Texas law (which may be more lenient than the federal standards), and I can’t wait to see how the case unfolds.

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1 Comment

Filed under Law, Trademarks, Uncategorized

One response to ““Stripper Idol” Part Deux

  1. Pingback: Stripper Idol update: Answer (and simultaneous motion to dismiss) filed « Arbitrary & Fanciful

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